Patent Attorney

Beyond a Resume

Beyond a Resume is seeking a full-time Patent Attorney in Rockville, Maryland:

Overall Responsibilities:

Develops and maintains company patent applications, trade secrets, trademarks, copyrights, licensing and research agreements, publications and intellectual property aspects of contracts and agreements.  Prepares legal opinions and analyses of patents.  Reviews and drafts significant corporate legal documents.  Evaluates the validity of competitors’ patents and advises company on freedom-to-operate.  Responsible for pre-patent filing review, providing legal advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company inventions.  Provides other general legal advice and represents the company in matters relating to intellectual property law.

Job Functions:

-Draft and prosecute U.S. and PCT international patent applications.

-Monitor and pay patent maintenance fees.

-Maintain docket for patent and trademark matters.

-Supervise outside counsel and in-house patent attorneys/agents.

-Advise on all aspects of intellectual property and regulatory exclusivity.

-Prepare documents in connection with intellectual property aspects of FDA filings.

-Participate in due diligence for acquisitions and licensing.

-Review intellectual property provisions of contracts.

-Participate in firm’s 401(k) retirement plan committee.

-Perform legal review in connection with emergency compassionate use program.

Skills/Experience Requirements:

-Five years or more drafting and prosecuting pharmaceutical and biotechnology patent applications in a law firm and/or in-house setting required.

-Contract negotiation and drafting, patent opinion, trademark, and copyright experience preferred.

-Registration with the U.S. Patent and Trademark Office required.

-Admission to the bar of at least one state required.

Educational Requirements:

-J.D. degree.

-Bachelor’s degree in organic chemistry, biochemistry, or a related field required. Master’s degree or Ph.D. preferred.

To apply for this job email your details to